India: Patents-in-waiting

With pendency rates ranging up to four years, India’s patent owners have a range of options to protect their innovations while they wait, explains Joginder Singh of LexOrbis.

Patenting can sometimes be time-consuming. As of today, the Indian patent office, (IPO), can take three to four years to grant a patent under the regular examination process, so what can an applicant do when a competitor starts copying an invention before the grant of a patent, ie, while a patent application for the same invention is pending with IPO for disposal?

It can be annoying to see competitors copying an invention while a patent application is pending for grant. It is pertinent to note that the product for which a patent has been applied, or the product made by a process for which the patent has been applied, can be marked as “patent pending” to notify that a patent has been applied for but not yet granted. The marking serves as an express notice to notify potential infringers that they may be liable for seizure, damages, and injunction once the patent is issued.

In India, the right to stop third parties infringing an invention claimed in a patent application and/or the right to claim damages, start only when the patent is granted. The underlying rationale is that the act of infringement is adjudicated based on the scope of a granted claim, and not based on a claim in the pending patent application.

Indian patent law also safeguards the interests of patent applicants during the period for which the patent application is pending, except that an infringement suit cannot be initiated until the patent is granted.

Warning letters

Patent applicants in India enjoy the privileges and rights of the holder of a granted patent, effective from the date of publication of the patent application. Thus, during the pendency of the patent application, the applicant can send a warning letter to potential infringers that the invention used by them is the subject of a pending patent application, and that once the patent is granted, they would be liable for infringement and therefore liable to pay damages to the patentee for the unauthorised use of the invention from the date of publication.

At the same time, the applicant should also investigate whether any other IP apart from patent—eg, trademark, copyright, or design—is being infringed so that the same can be included in the warning letter to make the applicant’s case stronger and the damages paid by an infringer, greater.

The downside of sending a warning letter is that the third parties would be alerted to a possible lawsuit upon the grant of the patent and therefore they might try to prevent, or at least delay, the grant of the patent by filing one or more pre-grant oppositions.

A pre-grant opposition may be filed on one or more grounds available for that purpose under the patent law. Examples of such grounds include, but are not limited to, lack of novelty, lack of inventive step, lack of enablement, and non-patentable subject matter.

One should, therefore, consider sending a warning letter only when very sure about the patentability of pending claims in India. If the applicant is confident that the invention claimed in the patent application can successfully survive a pre-grant opposition attack, it is prudent to send the warning letter during the pendency of the patent application itself so that later the applicant can claim damages from the publication date.

This would foreclose the potential infringers’ claim of “innocent infringement” to avoid or mitigate damages. Innocent infringement is an act of infringement caused without knowledge or awareness of such infringement. Therefore, in a suit for patent infringement, damages or account of profit is not granted against the defendant who is able to prove that at the date of infringement, the defendant was unaware of the patent and had no reasonable grounds for believing that the patent existed.

Other factors

Certain other factors also determine the applicability of damages or account of profit. For instance, where a specification has been significantly amended after the publication of the application, no damages or account of profit are granted in respect of the use of the invention before the allowance of that significant amendment.

In other words, the date for claiming damages in such cases shifts from the date of publication of the specification to the date of allowance of the significant amendment. However, if the court is of the view that an amendment carried out in the specification after the publication is not very significant, the court may allow the patentee to claim damages from the date of publication.

Sending a warning letter for alleged infringement to the suspected infringer is not a mandatory legal requirement. The suspected infringer’s liability to pay damages is ordinarily from the date of publication of the specification, provided no significant amendments are made to the granted specification.

However, if the court is satisfied that the originally-published specification was framed in good faith with reasonable skill and knowledge, then even amendments carried out during the prosecution would not affect the suspected infringer’s liability to pay the damages from the date of publication.

The only exception to this applies when the defendant, ie, the alleged infringer, proves in the proceeding that he was not aware and had no reasonable ground for believing that the patent existed. Therefore, to pre-empt such defence of “innocent infringement”, generally it is recommended to put the suspected infringer under notice as soon as the applicant becomes aware of such alleged infringement. The applicant should also be ready to face counter-attack from the suspected infringer who may try to stall the prosecution of the application by filing pre-grant opposition.

In general, a notice letter to the alleged infringer can be quite effective. However, in some exceptional cases, the applicant may want to wait to take any legal action until a patent is granted. At the same time, the applicant may look for options to speed up the grant of the patent and file a suit for infringement after the grant of patent.

Article was 1st published in World Intellectual Property Review by Joginder Singh